Vietnam national phase – Patent applications of PCT application – Patent applications under the Paris convention utility model (called utility solution) – Applications general remarks


I. NATIONAL PHASE PATENT APPLICATIONS OF PCT APPLICATIONS

I.1. Requirements

I.1.1 Specification

  • A Vietnamese translation of the specification must be filed at the time of filing the application. No extension is possible.
  • If there are amendments under PCT Article 19 or 34, Vietnamese translations of the amendments are required at the time of filing the application. And, when filing the application, the applicant has to indicate whether the applicant wishes the Intellectual Property Office of Vietnam (IPVN) to examine the original specification or amended specification.

I.1.2. Name, address and nationality of inventor, and name and address of applicant

  • These data must be designated in an application form which must be filed at the time of filing the application.
  • This information is reviewed quite strictly by examiners. For example, a small discrepancy of an address among the application documents may result in an office action. It is likely quite complex to deal with this issue in the national phase. Therefore, it is recommended to make requests under PCT Rule 92bis to avoid such discrepancies.

I.1.3. Power of attorney

The IPVN requires an original power of attorney or a copy of a general power of attorney. The non-extendable deadline for submitting the original power of attorney or the copy is 34 months from the earliest priority date (or the international filing date if the international application claimed no priority) and notarization is not required.

I.2. Procedures

The national stage applications will be examined as to formalities, then published, and then substantively examined as described below.

  • The formalities examination results will be available within few months.
  • The application will be published within two months after it passes the formalities examination.
  • In principle, the substantive examination results will be available within 18 months from either (i) the date of receipt of the request for substantive examination, if the request is filed after the publication date, or (ii) the publication date, if the request is lodged before the publication date.

I.3. Written opinion and opposition

From the publication date of an application in the Official Industrial Property Gazette (Gazette) to the granting date, a third party may submit a written opinion to the IPVN regarding the granting or not-granting of a patent. Such written opinion serves as a reference information resource during the examination.

Within nine months from the publication date of an application in the Gazette, a third party may file a request for opposition. The IPVN will process the opposition and inform the opposer of the processing result together with the examination result of the application.

II. PATENT APPLICATIONS UNDER THE PARIS CONVENTION

II.1. Requirements

II.1.1. Specification

  • A Vietnamese specification must be filed at the time of filing the application. There is no mechanism to file a specification in a foreign language first, and then, submit the Vietnamese specification.

II.1.2. International Patent Classification (IPC) symbols and figures accompanying the abstract

  • IPC symbols of the invention are required to be indicated in an application form which must be filed at the time of filing the application. If no symbol is indicated or incorrect symbols are indicated in the application form, the IPVN will classify the invention and charge a fee.
  • One or more figures to accompany the abstract part of the application are often required to be indicated in the application. The figures should be the ones which characterize the invention. A fee for such figures from the second will be charged.

II.1.3. Name, address and nationality of inventor; name and address of applicant; and filing date, receiving state and number of priority application

  • These data must be designated in the application form.

II.1.4. Power of attorney

  • The IPVN requires an original power of attorney (POA) or a copy of a general POA already filed. Notarization for a POA is not required. There is no fixed deadline for the submission of a POA. When examining as to formalities for an application without a POA, the IPVN would issue an office action requiring the submission of a POA within two months from the date of the office action (with the possibility of extending the deadline once for an additional two months). The applicant should proactively submit the POA, preferably at the time of filing the application and latest at the time of submitting the priority document (if any) to avoid the office action.

II.1.5. Priority document

  • The non-extendable deadline for submitting the priority document is three months from the filing date.
  • The IPVN also requires a Vietnamese translation of its cover sheets to determine the applicant of the priority application.
  • If the applicant of the priority application is not the applicant of the Vietnamese application, it is required to submit an additional document such as an assignment to prove that the applicant of the Vietnamese application has the right to claim the priority. The assignment may be an original or notarized/certified copy.

II.2. Procedures

The applications will be examined as to formalities, then published, and then substantively examined as described below.

  • The formalities examination results will be available within few months.
  • Normally, the application will be published in the 19th month from the priority date, if the applicant does not request an early publication.
  • In principle, the substantive examination results will be available within 18 months from either (i) the date of receipt of the request for substantive examination, if the request is filed after the publication date, or (ii) the publication date, if the request is lodged before the publication date.

II.3. Written opinion and opposition

From the publication date of an application in the Official Industrial Property Gazette (Gazette) to the granting date, a third party may submit a written opinion to the IPVN regarding the granting or not-granting of a patent. Such written opinion serves as a reference information resource during the examination.

Within nine months from the publication date of an application in the Gazette, a third party may file a request for opposition. The IPVN will process the opposition and inform the opposer of the processing result together with the examination result of the application.

III. UTILITY MODEL APPLICATIONS

“Utility Model” is called “utility solution” in Vietnam. The fields covered by patents for invention and patents for utility solution are the same. During prosecution, a patent application for invention may be converted into a patent application for utility solution and vice versa.

Differences with patents for invention are:

  • The requirements for invention are novelty over the world, inventive step and industrially applicable, while the requirements for utility solution are novelty over the world, industrially applicable and that the utility solution is not ordinary knowledge. (Inventive step is replaced by “not ordinary knowledge“).
  • The period of protection is 20 years for patents for invention from the filing date, while it is 10 years for patents for utility solution from the filing date.
  • The deadline for filing a request for examination in a patent application for invention is 42 months from the earliest priority date, while it is 36 months for a patent application for utility solution.

IV. GENERAL REMARKS

IV.1. Annuities: In Vietnam, annuities are not payable for pending applications. The payment for the first annuity is required in the invitation to pay the granting fees and first annuity.

IV.2. Claims: Method of medical treatment claims, omnibus claims, and claims in the form of “An improvement …”, use claims (claims commencing with “use of”) are not acceptable.

IV.3. Amendments to specification and divisional applications: Voluntary amendments and divisional applications can be filed at any time during the prosecution (before the granting date or before the application receives a decision of refusal). Besides, Vietnam does not apply those like the doctrine of estoppel. For example, it is possible to delete some claims and then re-introduce the deleted claims by amendments.

IV.4. Form of patent certificate: Patent certificates can be issued in an electronic form or in a paper form, depending on the choice of the applicant.

Patent Department

INVESTIP – IP LAW FIRM